aippi ip in germany and france paris, 7-8 november 2013 threee-dimensional marks contribution josé...

AIPPIAIPPI

IP IN GERMANY AND FRANCEIP IN GERMANY AND FRANCE

Paris, 7-8 November 2013 Paris, 7-8 November 2013

THREEE-DIMENSIONAL MARKSTHREEE-DIMENSIONAL MARKS

Contribution Contribution José MONTEIROJosé MONTEIRO

(L’Oréal)(L’Oréal)

04/19/23 1AIPPI - FORUM - PARIS


The state of law and practice before the Directive 89/104 of

21 December 1988, to approximate the laws of the Member

States relating to trademarks

In France(Loi du 31 décembre 1964)


The question is whether the shape of the product per se,

or the shape of the container or the packaging, are likely to be registered as a trademark.

The issue was questionable for a certain doctrine.


However for the majority, the shape of a product is a material sign

capable of identifying the source of origin of the product to which it applies.

And the fact it fits into the product itself, doesn’t deprive it of this inherent dictinctive

character.


It is the same, and probably more surely, of the packaging

by the simple reason that if a packaging can be a protected trademark by its decoration,

it can also be a trademark because of its shape.


Obviously, a shape or a container, is not distinctive when it is

necessary to obtain a technical result.


04/19/23 AIPPI - FORUM - PARIS 8

DescriptionDescription Appl. Date /Appl. Date /

Reg.. NumberReg.. Number

DecisionDecision MarkMark

Boite de Boite de confiseries confiseries cylindriquecylindrique

26/01/198926/01/1989 15283191528319

CA Paris CA Paris 04/10/199004/10/1990

Flacon de Flacon de parfumparfum

23/07/198623/07/1986 13648101364810

CA Paris CA Paris 29/03/198929/03/1989

Sachet de Sachet de couleur rosecouleur rose

06/05/195906/05/1959 911 966911 966

Cass. Com. Cass. Com. 17/01/198917/01/1989

Some examples of TM that have been estimated admissible by the French Courts


784838

TGI Paris 26/04/1975

CA Nimes 12/10/1982

24/09/1991 1695187

CA Paris 13/07/1974; Cass. Com. 16/02/1976


11/03/1997 97 667 886

TGI Paris 14/01/2004

18/12/1989 1566540

CA Paris 24 février 2003

06/05/1994 94/519317

CA Paris 10/05/2002

The situation in Germany under the Warenzeichengesetz


Under the WZG, a trademark was understood to be a two-dimensional sign only.

In order to get trademark protection for a three-dimensional form, one had to register

a two-dimensional sign. The jurisdiction than also confirmed a likelihood of

confusion between the registered sign and the get up used by of a third party.


The shape of a product or its container could gain registration as a 3D trademark

only if it was regarded in the concerned trade circles, as sufficiently distinctive

i.e. if it had acquired a secondary meaning.



Registration no. Appl./Reg. Date Mark

DE 0109762427.11.1985/15.10.1986

DE 0094462322.08.1975/18.05.1976

DE 0048660804.05.1936/03.07.1936

DE 01128522 26.11.1987/

05.10.1988

EXAMPLES OF REGISTERED 2D SIGNSEXAMPLES OF REGISTERED 2D SIGNS


DE 0113111502.11.1988/25.11.1988

DE 0086652719.07.1968/24.02.1970

DE 00647809 25.04.1990/14.08.1991

DE 0084345826.10.1967/12.03.1968


DE 0095295706.11.1976/23.12.1976

DE 00205223025.09.1992/17.12.1993

The directive 89/104 of 21 December 1988 (now Directive 2008/95 of 22

october 2008)to approximate the laws of the Member

States relating to trademarks.


Preamble:

Attainment of the objectives at which the approximation of TM laws is aiming,

requires that the conditions forobtaining and continuing to hold a registered

trademark be, in general, identical in all Member States.


To this end, it is necessary to list examples of signs which may constitute a trademark, provided that such signs are capable of

distinguishing the goods or services of oneundertaking from those of other undertakings.


The grounds for refusal or invalidity concerning the trademark itself, for example, the absence

of any distinctive character or conflicts between the trademark and earlier rights,

should be listed in an exhaustive manner, even if some of these grounds are listed as an

option for the Member States.


Article 2Article 2Signs of which a trademark may consistSigns of which a trademark may consist

A trademark may consist of any signs capable of being represented graphically, particularly …

the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other

undertakings.


Article 3Grounds for refusal or invalidity

1. The following shall not be registered or, if registered, shall be liable to be declared invalid:

(a) signs which cannot constitute a trademark;(b) trademarks which are devoid of any distinctive

character;


e) signs which consist exclusively of:

(i) the shape which results from the nature of the goods themselves;(ii) the shape of goods which is necessary to obtain a technical result;(iii) the shape which gives substantial value to the goods;


The ECJ and CFI case-law and the CTM practice by the OHIM


The main principlesThe main principles::

1° the distinctive character of a trademark, must be assessed, firstly, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to the perception by the relevant public, 2° The criteria for assessing the distinctive character of three-dimensional marks consisting of the shape of the product itself are not different from those applicable to other categories of trademarks.


3° None the less, for the purpose of applying those criteria, the relevant public's perception is not necessarily the same in the case of a 3D mark consisting of the shape of the product itself, as it is in the case of a word or figurative mark consisting of a sign which is independent from the appearance of the products.


Average consumers are not in the habit of making assumptions about the origin of products on the basis

of their shape or the shape of their packaging,in the absence of any graphic or word element

and it could therefore prove more difficult to establish distinctiveness in relation to such a three-

dimensional mark than in relation to a word or figurative mark.


A recent application reminds and explains more than usually, these principles

CFI 28 May 2013, 28 May 2013, Case T-178/11, Voss of Case T-178/11, Voss of

Norway Norway


It follows from the case-law that average consumers

(buyers of alcoholic or non-alcoholic beverages throughout the EU)

do not normally choose a product or distinguish it from a competitor’s product,

merely on the basis of its design or the design of its packaging.


On the contrary, they look for verbal or graphic signs, words,

names, emblems, devices, images, etc., on the product or its packaging

that will inform them more reliably about the origin of such product.


Le Court also says that this ruling reflects the common sense the common sense

and the practical experience the practical experience as regards consumers’ behavior in respect of

most products, which entails those consumers instinctively looking for a verbal or graphic sign

on the product or its container.


That will tell them about the industrial or commercial origin of the product

and then using that sign in order to distinguish that product from identical products made by

other undertakings.


By contrast, consumers will not rely on the outline or shape

of a product or its container in order to determine its origin without having

been exposed to that outline or shape for a sufficiently long period

to have learned to recognize it ‘at a glanceat a glance’ without even needing to look for a verbal or

graphic sign (as in the case of Coca Cola bottles) ‑

.


That’s why the case-law dealing with the distinctive character of trademarks

consisting of the appearance of a product or its container,

says that ‘it might be more difficult to establish the distinctive character of that typology of marks than for verbal or figurative marks’.


It is also a well-known fact, well-known fact, for the Court,that very few products are offered on the market

without any “verbal or graphic element” to identify them.

Consumers are not, for that reason, used to choosing among unmarked products or packages.


Finally, branding practices are important and must be taken into consideration,

when assessing the ability of a sign to function as a trademark.


And it’s time now to see with Laurence, Jochen and Ralf,

how these principles are applied and enforced by our TM Offices and the Courts.

Many thanks([email protected])


aippi ip in germany and france paris, 7-8 november 2013 threee-dimensional marks contribution josé...

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